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Federal Circuit admonishes district court for ignoring explicit mandate in original remand

In a tersely worded opinion, the U.S. Court of Appeals for the Federal Circuit reversed a lower court’s decision to dismiss and remanded with instruction to permit the appellant patentee to proceed with its infringement claim. The panel admonished the lower court for ignoring its explicit instructions in the original remand. Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Solutions, Case No. 07-1575 (Fed. Cir., June 16, 2008) (Clevenger, J.).

Central Admixture Pharmacy Services, Inc. and Dr. Gerald D. Buckberg (together known as CAPS) brought a patent infringement suit against Advanced Cardiac Solutions and Charles Wall (together, ACS) in August 2000. On January 31, 2001, the United States Patent and Trademark Office(USPTO) issued a Certificate of Correction (COC), which effectively broadened the scope of the claim CAPS asserted against ACS. CAPS subsequently stipulated that “if the COC is held valid … Plaintiffs do not intend to pursue their claim for damages against Defendants for infringement of the … patent for any sales of the accused solutions made prior to issuance of the COC.” Thereafter the district court ruled that the COC was valid and entered a Pretrial Order stating that “Plaintiffs have withdrawn their claim that Defendants infringe the ’515 patent claims prior to issuance of the COC.” The district court then entered summary judgment for CAPS against ACS on the issue of infringement of the post-COC claims. ACS appealed the adverse summary judgment to this court.

In its initial reversal of the district court in April 2007, the Federal Circuit held that the COC was invalid and vacated the finding of infringement and remand for a re-determination of infringement under the patent’s original, uncorrected claims.” (See IP Update, Vol. 10, No. 4). On remand, the district court rejected CAPS’s argument that the decision mandated that CAPS be permitted to pursue its claim of infringement of the pre-COC claim by ACS and interpreted the Federal Circuit’s decision to require it to do no more than revisit the possibility of further proceedings under the original version of the claims. The district court held that it had broad discretion whether to amend its earlier pretrial order, which had eliminated the pre-COC infringement issue and concluded that CAPS failed to meet the requirements under Eleventh Circuit law to obtain amendment of the pretrial order. The district court thus dismissed CAPS’s suit with prejudice. CAPS appealed.

On appeal, the Federal Circuit noted that its prior decision and mandate were clear: on remand, the district court was to decide the merits of CAPS’s infringement claim under the pre-COC claims. The Court observed that the district court was not at liberty to “determine” the issue on procedural grounds and that CAPS was entitled to pursue its pre-COC infringement claim. In a tersely worded opinion, the Court added that, in three places in the prior opinion, it explicitly directed the lower court to decide the merits of CAPS’s infringement claim under the pre-COC claim, adding “and to boot we amplified our order in a long footnote enumerating issues related to CAPS’s infringement claim that remained for decision on remand.”

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